DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 16 July 2025 has been entered.
Response to Amendment
Claims 1, and 8 have been amended (claims 12-17 remain withdrawn and claims 2-3, and 7 were previously cancelled). Claims 1, 4-6, and 8-20 are pending with claims 1, 4-6, 8-11, and 18-20 being considered in the present Office action.
Applicant’s amendment and remarks appear to try to establish the newly cited claimed range (0.55-0.65) as providing unexpected results. A successful showing of unexpected results regarding a narrower range than was originally claimed/taught would bring forth a new matter issue, as it would show that the newly claimed range is a different invention than the originally disclosed range. See MPEP 2163(I)(B). No new matter issue has been made at this time, as arguments of unexpected results are not persuasive.”
Applicant's arguments have been fully considered but they are not persuasive (detailed below).
Response to Arguments
Applicant argues the prior art lacks any motivation to arrive at the claimed ratio of a diameter of the core to a total diameter of the active material particle in a range of 0.55 to 0.65. Applicant states the claimed ratio is arrived at my impermissible picking and choosing convenient values from an innumerable combination of values.
Applicant’s arguments regarding innumerable combinations of values and hindsight are not persuasive. First, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). Second, "where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages, see Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382. Finally, when there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp; if this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under §103, KSR International Co. v. Teleflex Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007)).
In this case, the prior art (Noh and Park) suggests well defined ranges (i.e., total diameter (e.g., Noh suggests 4-20 micron and 6 µm particles, Park suggests 3-18 micron particles), core diameter (e.g., Park suggest 2-15 micron core diameters), and shell thickness (e.g., Noh suggests 0.5-2.5 micron shell thickness, Parks total diameter and core values suggest a shell thickness of 0.5 microns or more)), and Park provides motivation to select the values within each defined range. For example, Park suggests a total diameter in the range of 3-18 microns is expected to increase filling property and improve coating power (thereby increasing electrode capacity), see e.g., pages 7-9/41. Additionally, Park suggests a core diameter in the range of 2-15 microns is expected to prevent a reduction in discharge capacity and prevent a deterioration in thermal stability, see pages 7-9/41. Park’s suggestion of total diameter and core diameter suggests a shell thickness of 0.5µm or more, from the stand point of achieving an increased filling property and improve coating power (thereby increasing electrode capacity), and to prevent a reduction in discharge capacity and prevent a deterioration in thermal stability. The selection of the core diameter and total diameter within the defined ranges suggested by Noh and Park is nothing more than routine experimentation to determine where in the defined range is the optimum or workable range, and further obvious from the standpoint of achieving increase filling property and improve coating power, and preventing a reduction in discharge capacity a deterioration in thermal stability. In determining where in the ranges are workable values, one of ordinary skill in the art would arrive at the claimed ratio, and doing so would be obvious from the standpoint of, among other things, increase filling property and improve coating power, thereby increasing electrode capacity, and preventing a deterioration thermal stability. Further, since the prior art presents a market pressure to solve a problem (i.e., preventing a reduction in discharge capacity, and thermal stability) and a finite number of solutions (i.e., well defined total diameter range and well defined core diameter range, hence shell thickness), one of ordinary skill in the art would be motivated to experiment each ranges to reach another workable product with the expectation of achieving thermal stability and preventing a reduction in discharge capacity.
Applicant’s arguments related to the Kraus and Solenis case law is not persuasive. Contrary to applicant’s conclusion, the Kraus and Solenis case is NOT analogous to the present case; that is, in the current rejection, the examiner did not select values from two different examples, as was the case in Kraus and Solenis, nor did the examiner use a “result-effective variable” motivation. Rather, as detailed above, the prior art suggests well defined ranges and motivation to select values within the defined range to arrive at the claimed ratio.
Applicant argues Park is silent on any relationship between the disclosed diameter ranges for the inner core and entire active particle. This argument is not persuasive. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages," see also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382. See MPEP 2144.05, II. In this case, the claimed ratio is obtained when one of ordinary skill aims to determine where in a disclosed set of ranges (total diameter, core diameter, shell thickness) is the optimum combination or workable range; one of ordinary skill in the art is further motivated by, and arrives at the claimed ratio, from the standpoint of increased filling property and improve coating power, thereby increasing electrode capacity, and in preventing a reduction in discharge capacity, and deterioration of thermal stability.
Applicant’s arguments with respect to the Stepan case law, and reasonable expectation of success, are not persuasive. First, the Stepan case law is not analogous to the current rejection, especially considering the current claims are not related to a formulation, and the rejection is not solely based on optimizing the ingredients of any formulation. Second, the current rejection is based on optimizing numerical value(s) from a well defined range in the prior art, not just for the sake of optimization (i.e., where in the disclosed range is the optimum), but from the standpoint of achieving some advantage (i.e., filling property, maintaining discharge capacity, preventing deterioration in thermal stability, etc.).
Applicant argues the claimed ratio of the core diameter to total particle diameter (i.e., 0.55-0.65) is critical and unexpected. The originally filed claims and disclosure makes reference to the ratio as 0.5 to 0.85 as having excellent charge/discharge capacity and almost no leakage current, see e.g., published disclosure [0111]. In other words, the applicant’s arguments of unexpected results are not persuasive because values outside the claimed range (0.5, 0.85) have been described as “excellent” and “no leakage current”; hence, the instant disclosure does not support the claimed range (0.55-0.65) is critical.
Moreover, any differences between the claimed invention and the prior art may be expected to result in some differences in properties. The issue is whether the properties differ to such an extent that the difference is really unexpected. In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986), MPEP 716.02. Applicants must further show that the results were greater than those which would have been expected from the prior art to an unobvious extent, and that the results are of a significant, practical advantage. Ex parte The NutraSweet Co., 19 USPQ2d 1586 (Bd. Pat. App. & Inter. 1991), MPEP 716.02(a). "Expected beneficial results are evidence of obviousness of a claimed invention, just as unexpected results are evidence of unobviousness thereof." In re Gershon, 372 F.2d 535, 538, 152 USPQ 602, 604 (CCPA 1967), MPEP 716.02(c).
Examiner has plotted the Capacity Retention Rate data provided, as a function of the claimed ratio included points inside and outside the claimed range (i.e., 0.4, 0.45, 0.5, 0.55, 0.65, 0.75, 0.85, 0.90; values in bold are ratio values inside the claimed range).
[Chart]
The Capacity Retention Rate does not appear to be critical or unexpected inside the claimed range (0.55-0.65), particularly with respect to the lower end of the claimed range (i.e., 0.55). The data points at a ratio of 0.40, 0.45, 0.50 and 0.55 are all about the same value (i.e., around 96%). Moreover, the variation of the Capacity Retention Rate inside the claimed ratio range (i.e., between 0.55 and 0.65) is larger than the variation in Capacity Retention Rate observed going from inside the claimed ratio range to outside the claimed ratio range (i.e., from 0.55 to 0.5, or from 0.55 to 0.45). That is, the difference between the Capacity Retention Rate at a ratio of 0.55 (98%) and the Capacity Retention Rate at a ratio of 0.65 (98.8%) increases by about 0.8%; meanwhile, the Capacity Retention Rate at a ratio 0.50 (98.7%) increases by only 0.7% compared to the Capacity Retention Rate at a ratio of 0.55 (98%), which is less than the variation seen inside the claimed ratio range (i.e., 0.55-0.65). In other words, the Capacity Retention Rate does not appear to change to an unexpected extent at the lower end of the claimed range. Applicant has not established the differences in results are in fact unexpected and unobvious and of both statistical and practical significance. MPEP 716.02(b). In view of the foregoing, the claimed ratio (0.55-0.65) is not critical or unexpected with respect to the Capacity Retention Rate.
Further, the Average Leakage Current data is plotted as a function of the claimed ratio including points inside and outside the claimed range (i.e., 0.4, 0.45, 0.5, 0.55, 0.65, 0.75, 0.85, 0.9; values in bold are ratio values inside the claimed range; note that the originally filed claims included the ratios 0.5, 0.55, 0.65, 0.75, and 0.85 as inside the claimed range, see e.g., originally filed claims and published disclosure [0111]).
[Chart]
The Average Leakage Current does not appear to be critical or unexpected inside the claimed range (0.55-0.65) based on the disclosure; the instant published disclosure ([0111]) states when “the ratio of the core part to the total diameter of the particle was 0.5 to 0.85 … almost no leakage current was generated”. In other words, the disclosure appears to suggest the leakage current values at 0.5, 0.75 and 0.85 are considered “almost no leakage current’. Thus, claimed range (i.e., 0.55-0.65) has not been shown to be critical, or unexpected compared to values outside thereof with respect to Average Leakage Current. Applicant has not established the differences in results are in fact unexpected and unobvious and of both statistical and practical significance. MPEP 716.02(b).
Claim Rejections - 35 USC § 103
Claims 1, 4-6, 8-11 and 18-19 are rejected under 35 U.S.C. 103 as being unpatentable over Noh et al. (US 2016/0218350) in view of Park et al. (KR100752703), hereinafter Noh and Park (both of record).
Regarding Claims 1, 6, 8, 11 and 18-19, Noh teaches a positive electrode for a lithium secondary battery comprising a positive electrode active material (see title) comprising a core part (i.e., first interior, I) and a shell part (i.e., second interior, II) formed around the core part, wherein the core part and the shell part include a lithium composite transition metal oxide, which includes Ni and Co, and at least one or more selected from the group consisting of Mn and Al, wherein the positive electrode active material consists of a secondary particle in which primary particles (10) of the lithium composite transition metal oxide are agglomerated, a lithium ion diffusion path in the primary particle is formed toward a center of the secondary particle (see e.g., para. [0131], and Figs. 1-2 and claims 9-10).
Example 15-1 of Noh teaches a constant core (first interior (I)) of 90:05:05 with respect to Ni:Mn:Co, and a concentration gradient in the shell (second interior (II)) from 90:05:05 to 33:33:33 with respect to Ni:Mn:Co, see e.g., [0131]; thus, Noh suggests the core part comprises a Ni content of 88 mol% or more among total metal elements (e.g., 90 mol %), and the shell part has a concentration gradient such that a Ni concentration at a start point of the shell part near the core part is 30 mol% or higher than that at an end point of the shell part near a surface of the particle. That is, the shell part near the core is about 57 mol% higher than that at an end point of the shell part near a surface of the particle (90-33=57), see also paras. [0132]-[0136]). Noh’s example teaches a value (i.e., 57 mol%) that does not overlap with that claimed (30-55 mol%), but is close. Further, Example 15-1, having a Ni concentration of 0.33, does not suggest the Ni concentration at the end point of the shell near the surface of the particle is 40 mol% or more. However, Noh suggests the amount of Ni varies with respect to the amounts of Co and Mn in the core and shell, see e.g., [0060, 0030]. Noh suggests the core (i.e., first interior, e.g., LiNi1-(a+b)CoaMnbO2) comprises Coa where 0 ≤ a ≤ 0.4 and Mnb where 0 ≤ b ≤ 0.35; meanwhile, the shell comprises Coa where 0.07 ≤ a ≤ 0.2 and Mnb where 0.2 ≤ b ≤ 0.5; further, Table 13 shows various examples of shell compositions (e.g., 50:20:30, or 40:20:40, etc.) Thus, Noh suggests the Ni:Co:Mn amounts of the shell is e.g., 0.40:0.20:0.40 (or written as 40:20:40). The modification of Ni, Co and Mn in the shell of Example 15-1 as suggested by paragraphs [0030, 0060] and table 13, suggests a core whose Ni Co, Mn values are constant at 90:5:5 and a shell having a gradient from 90:5:5 to 40:20:40. Thus, Noh suggests a Ni content in the core part is 88 mol% or more (e.g., 90 mol%), the shell has a Ni concentration gradient at a start point of the shell near the core 30 mol% or higher and 55 mol% or lower than that at an end point of the shell near the surface of the particle (e.g., 90-40 = 50 mol%), and the Ni concentration at the end point of the shell part near the surface of the particle is 40 mol% or more (e.g., 40 mol%). As another example, based on [0030, 0060], table 13, Noh suggests the shell may be e.g., Ni:Co:Mn 0.5:0.20:0.30 (which may be written as 50:20:30); in this case, a constant core of 90:5:5 and a gradient shell from 90:5:5 to 50:20:30 suggests the Ni content in the core part is 88 mol% or more (e.g., 90 mol%), the shell has a Ni concentration gradient at a start point of the shell near the core 30 mol% or higher and 55 mol% or lower than that at an end point of the shell near the surface of the particle (e.g., 90-50 = 40 mol%), and the Ni concentration at the end point of the shell part near the surface of the particle is 40 mol% or more (e.g., 50 mol%).
As detailed above, Noh suggests values that overlap with those claimed or are close. A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of "having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium" as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium. "The proportions are so close that prima facie one skilled in the art would have expected them to have the same properties."). Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of "having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium" as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium. "The proportions are so close that prima facie one skilled in the art would have expected them to have the same properties."). See MPEP 2144.05, I., and II. Also, "where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955); see also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382. "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages."; In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969)
Noh teaches the shell part includes lithium composite transition metal oxide particles with crystal orientation radially grown in a direction from a center to the surface of the particle of the positive electrode active material (see e.g., Figs. 1, 3-5 and paras. [0017], [0053], etc.).
Noh suggests the total diameter of the particle is 4-20 microns, see e.g., [0011, 0020]; in Fig. 6 d a 6 µm sized particle is exemplified. Further, Noh suggests a shell thickness ranges between 0.2-2.5 microns (Table 13). Thus, Noh suggests a ratio of a diameter of the core part to a total diameter of a particle of the positive electrode active material which overlaps with that claimed, i.e., 0.55 to 0.65; that is, a 6 µm sized particle (as suggested by Fig., 6 d and the disclosed, i.e., 4-20 microns) including a shell in the range of 0.2-2.5 microns (e.g., 1.2 µm, as suggested in the examples of Fig. 13) suggests a ratio of a diameter of the core (i.e., 6 µm - (1.2 µm x 2) = 3.6 µm) to a total diameter of the particle (i.e., 6 µm) is 0.55 to 0.65 (i.e., 3.6 µm/6 µm = 0.6). Further, the resulting ratio of a thickness of the shell (i.e., 1.2 µm) to a radius of the particle (6 µm/2) is 0.4 (1.2 µm/3 = 0.4), which overlaps with the claimed range of 0.35-0.45. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages, see Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382. Noh suggests the claimed ratios through routine experimentation in determining where in the disclosed set of values is the optimum or workable range. Park provides additional motivation to select the ranges suggested by Noh, detailed next.
Park suggests the total diameter of the particle is preferably 3 µm to 18 µm, from the standpoint of increasing the filling proper and coating power, thereby increasing electrode capacity, 7-9/41; thus, it would be obvious to one having ordinary skill in the art the total diameter of the particle is about 6 µm with the expectation of achieving an improved filling property and coating power (hence increased electrode capacity), as suggested by Park.
Park further suggests the core diameter of the aforementioned particles having a total diameter of 3-18 microns is preferably selected from 2 to 15 microns (hence, suggesting a shell of 0.5 µm or more) so that the discharge capacity is not reduced and the thermal stability is not deteriorated, see pages 7-9/41. In other words, Park suggests a particle having a total diameter of 6 µm preferably includes a core diameter from 2-15 microns (e.g., 3.6 µm, hence a 1.2 µm shell thickness which is between 0.5-2.5 micrometer shell thickness suggested by Noh) with the expectation of maintaining discharge capacity and thermal stability, as suggested by Park.
In view of the foregoing, not only does Noh suggest a total diameter range, a core diameter range and a shell range that arrives at the claimed ratio through routine experimentation in determining where in the disclosed ranges is the optimum or workable range, but Park further provides motivation in selecting values to arrive at the claimed ratio, i.e., from the standpoint improving filling property and coating power (hence increased electrode capacity), and from the standpoint of preventing a reduction discharge capacity and preventing the thermal stability from deterioration.
Regarding Claim 4, Noh suggests the Ni concentration in the core part is constant, see Example 15-1, para. [0131].
Regarding Claim 5, Noh suggests the shell part has a concentration gradient such that the Ni concentration is gradually decreased from the start point of the shell part to the end point of the shell part, see Example 15-1, para. [0131] where the Ni concentration decreases from 90 mol% to 40 mol% (see modification presented in the rejection of claim 1).
Regarding Claim 6, as detailed under the rejection of claim 1, Noh suggests in the shell part, a Ni content is e.g., 50 to 90 mol% among the total metal elements contained in the lithium composite transition metal oxide, see Example 15-1, para. [0131] which was modified such that the Ni concentration in the shell decreases from 90 mol% to 40 mol%, or 90 mol% to 50 mol%, as suggested by [0060]
Regarding Claim 9, Noh teaches the lithium composite transition metal oxide of the core and the shell part is represented by formula I (see e.g., Example 15-1, para. [0131], Table 13, and [0030, 0060]):
PNG
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211
669
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Greyscale
Regarding Claim 10, Noh further teaches a surface layer (“surface maintaining section”), in addition to the core and the shell, including a lithium composite transition metal oxide including at least one or more of Ni, Co, and Mn and a concentration is constant, see e.g., para. [0020], [0034], [0068].
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Noh and Park in view of Kwon et al. (WO2016175597, of record), hereinafter Kwon.
Regarding Claim 20, Noh does not teach the Ni concentration in the shell gradually decreases from the start point to the endpoint at a rate of 0.1 mol%/µm to 3. mol%/µm. However, Kwon discloses a core shell material whose growth is controlled. Specifically, the metal concentration per 0.1 µm is 0.1 atomic% to 30 atomic%, thereby suggesting e.g., 1 mol%/µm, such that thermal stability is expected, see e.g., lines 359-391. It would be obvious to one having ordinary skill in the art the rate of the Ni concentration in the shell is 0.1 mol%/µm to 3 mol%/µm, with the expectation of thermal stability, as suggested by Kwon.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANNA KOROVINA whose telephone number is (571)272-9835. The examiner can normally be reached M-Th 7am - 6 pm.
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/ANNA KOROVINA/Examiner, Art Unit 1729
/ULA C RUDDOCK/Supervisory Patent Examiner, Art Unit 1729
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